DECISIONS OF THE EXAMINERS-IN-CHIEF FOR THE YEAR 1914. BARBER V. WOOD. Decided April 25, 1911. 207 O. G., 299. 1. ABANDONMENT OF INVENTION-SECTION 4897 CONSTRUED. "It is believed to be certain that any state of facts which would constitute an abandonment' such as would bar an inventor seeking a patent under section 4886 would also constitute such an abandonment as would bar an inventor seeking a patent under section 4897." 2 PRIORITY-INTERFERENCE-FORFEITED APPLICATION-ABANDONMENT. Where Wood, with knowledge that Barber was in the field, deliberately withheld his invention from the market and neglected to renew his forfeited application or to reassert his claims for a patent until practically the end of the period allowed by the statute, Held that such conduct on the part of Wood amounts to an abandonment of the invention within the meaning of that term as used in section 4897, and priority of invention is awarded to Barber. ON APPEAL from a decision of the Examiner of Interferences awarding priority to Wood. SHEET-DELIVERY MECHANISM FOR PRINTING PRESSES. Mr. Walter F. Rogers for Barber. Messrs. Southgate & Southgate for Wood. Before SKINNER and BAYARD, Examiners-in-Chief, (third member absent.) In the matter of the interference between the patent of Howard M. Barber, No. 757,248, granted April 12, 1904, on an application filed June 30, 1903, Serial No. 163,676, and the application of Henry A. Wise Wood, filed April 23, 1897, Serial No. 633,518, and renewed. January 6, 1906, Serial No. 294,923, (Patent No. 1,049,435, January 13, 1913.) 72367-15- -1 1 SKINNER, Examiner-in-Chief: The invention involved in this interference is a sheet-delivery mechanism for printing-presses. The issue of the interference is set forth in a single count, which reads as follows: In a printing machine, the combination of an impression cylinder, a receptacle for printed sheets, a reciprocating sheet-carriage and stationary ways therefor between said cylinder and receptacle, a fly arranged between said cylinder and receptacle, an endless carrier in said sheet carriage for receiving sheets from the cylinder, and means for operating said carriage, carrier and fly whereby sheets may be delivered printed side up by the carriage or printed side down by the fly. Wood, the senior party, is involved in the interference upon a renewed application. Barber, the junior party, is involved in the interference upon a patent. Barber's patent issued, through inadvertence on the part of the Patent Office and without any knowledge thereof or fault on the part of Wood, prior to the forfeiture of Wood's original application. Under these circumstances Barber can take no present advantage from the fact that he is a patentee. Hence he must enter the interference bearing the burden of proof by a preponderance of the evidence which is usually borne by a junior party. Both parties have presented testimony for consideration. Generally speaking, Barber's testimony is directed to establishing (1) that the device disclosed in Wood's original and renewed applications is inoperative, at least to the extent of rendering it improper to hold such applications a constructive reduction to practice of the invention in issue, and (2) that Barber placed the invention upon the market during the period of Wood's forfeiture and that Wood abandoned the invention under circumstances such that Barber, although a later inventor, is entitled to take a patent for the invention. The testimony submitted on behalf of Wood is intended as a refutation of the attack made in the testimony of Barber upon the operativeness of the device disclosed in the Wood applications. Additionaly, considerable testimony was given by Wood himself with reference to the history of his invention. Before us Barber contends that he should prevail on two grounds: (1) that the device disclosed in the Wood original and renewed applications is inoperative and (2) that Wood has abandoned the invention in the sense that he should be held to be estopped from claiming the same as against Barber. We shall proceed to consider these contentions, made by Barber, in turn. It is held that the testimony fails to establish that the device disclosed in the Wood applications is inoperative. So far, therefore, as Barber's testimony on the subject of the operativeness of the Wood device is concerned Wood's original application is to be regarded as a constructive reduction to practice of the invention in issue. We pass now to the second contention made on behalf of Barber, to the effect that Wood has abandoned his invention under circumstances which admit of the right of Barber to patent the same. The facts upon which this contention is based are substantially as follows: Wood's original application was allowed on January 21, 1904, but while in issue, awaiting the payment of the final fee, Barber's application, which had been copending with that of Wood, was inadvertently issued on April 12, 1904, with the claim now in issue therein. Wood forfeited his application on June 23, 1904, and did not renew it until January 6, 1906, over a year and a half after Barber's patent issued. During the period of Wood's forfeiture Barber or his assignees, without knowledge of Wood in the field, so far as is known, extensively placed the invention upon the market by building and selling a number of machines. It was therefore Barber and not Wood who first placed the invention in the hands of the public, and Barber contends that this was done either with Wood's knowledge or under circumstances such that Wood should be presumed to have known of it, and that upon such knowledge it became the duty of Wood to promptly reassert his rights to a patent by renewing his application, if he ever intended to do so. It does not affirmatively appear from the testimony of either party that Wood had actual knowledge of the embodiment of the subject matter of the invention in issue in the machines which Barber's assignees marketed. Wood seems to have known that such machines were upon the market; but he states that he had not inquired how these machines were constructed and operated until some time after the interference arose. During the taking of his deposition he produced a bound volume of patents and testified that he has in his possession bound volumes of all the patents issued in the United States upon printing machinery and similar devices and that he has made it a rule to familiarize himself with the state of the art. He does not state when he came into possession of these bound volumes; but it is altogether likely that he received them or the patents bound up therein within a reasonable time after such patents were issued by the Patent Office. Wood does not expressly testify that he had actual knowledge of the Barber patent prior to the renewal of his application; but it is highly probable that he did have such knowledge in view of his admitted regular practice of familiarizing himself with the patents in the art. We are satisfied that enough is shown by the testimony to warrant the conclusion that Wood had knowledge of a rival in the field for some time prior to the renewal of his application. Coupling the fact of such knowledge with his failure to renew his application until just prior to the end of the time allowed by the statute for that purpose, a pre sumption of acquiescence in the use of the invention which Barber had given to the public arises, such as in our judgment establishes that Wood has lost his right to a patent. As was said by the Su preme Court in the case of Shaw v. Cooper, (7 Pet., 292:) The doctrine of presumed acquiescence, where the public use is known, or might be known to the inventor, is the only safe rule which can be adopted on this subject. The Examiner of Interferences ruled against the contention of Barber as to the abandonment of Wood. He held that Wood had an absolute statutory right to renew his forfeited application at any time he pleased within the two-year period provided for the purpose by section 4897, Revised Statutes, unless Wood had abandoned the invention to the public. The Examiner of Interferences held that the term "abandonment," as used in section 4897, Revised Statutes, does not include cases falling within the doctrine of equitable estoppel. He pointed out that in such cases the renewal applicant is not relying upon an actual but a constructive reduction to practice, that no case was known to him in which the doctrine of equitable estoppel had been applied against a party relying upon a constructive reduction to practice, and he pointed to certain decisions of the Court of Appeals of the District of Columbia, such as Rolfe v. Hoffman, (C. D., 1906, 588; 121 O. G., 1350; 26 App. D. C., 336,) wherein it is asserted that the doctrine of equitable estoppel, which has been frequently applied since the case of Mason v. Hepburn (C. D., 1898, 510; 84 O. G., 147; 13 App. D. C., 86) in cases where a party losing under its application has relied upon an actual reduction to practice, is not to be extended to any case not coming clearly within the facts of such cases. We do not think that it was the intention of the court to rule that if the facts of a case were otherwise the same the mere difference that a party was relying upon a constructive instead of an actual reduction to practice would prevent the application of the rule. It is believed that there is direct authority for holding that the term "abandonment," as used in section 4897, Revised Statutes, includes cases in which a party has lost his right to a later inventor by virtue of the equities arising from the course of conduct pursued by him. Before turning to the authorities to which we have just referred a brief reference will be made to the historical development of the present provisions of section 4897, Revised Statutes. Under the act of 1863 when the final fee of allowed applications was not paid within six months the patent was withheld and the invention therein described became public property as against the applicant therefor. The succeeding act of 1864 merely extended the time when the previous law took effect for six months from the date of said act. The act of 1865 gave the unqualified right to make an application for the invention upon which the final fee had not been |